Free Letter - District Court of Delaware - Delaware

. Case 1 :04-cv-01536-JJF Document 46 Filed O3/08/2006 Page 1 of 3
YOUNG CONAWAY STAROATT & TAYLOR, LLP
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[email protected]
March 8, 2006
By E-Filing and Hand Delivery
The Honorable Kent A. Jordan
United States District Court
for the District of Delaware
844 North King Street
Wilmington, DE 19801
Re: Honeywell Int’l, Inc., et ol. v. Audiovox Comm. Corp., et ol.,
C.A. No. 04~1337-KA]
Honeywell [nfl, [nc., et ol. v. Apple Computer, [nc., et ol.,
C.A. No. 04-1338-KA]
Optrex America, Inc. v. Honeywell 1nz"l, [nc., et ol.,
C.A. No. 04-1536-KAJ
Dear Judge Jordan:
I am writing on behalf of Optrex America, Inc. ("Optrex") in the above—referenced
matters to inform Your Honor of the reasons for the discovery limitations and trial format
requested by Optrex in the Proposed Scheduling Order submitted to the Court today.
Tuming first to the number of deposition hours to be afforded each side, Honeywell’s
proposal is inadequate. Honeywell Offers to make its witnesses (including the inventors of the
patent in suit) available for 100 hours of deposition for common issues, 10 additional hours for
each defendant family to inquire into party-specific issues, and 75 hours per side to conduct third
party discovery. Optrex proposes that Honeywell make its witnesses available for 150 hours for
common issues, 21 additional hours per defendant family for party specific issues, and 112 hours
per side for third party discovery. The basis for the Optrex’s request for additional deposition
hours is set forth briefly below.
DB02:5223478.1 0650041001

Case 1:O4—cv—O1536-JJF Document 46 Filed O3/08/2006 Page 2 of 3
Youno CONAWAY STARGATT & TAYLOR, LLP
The Honorable Kent A. Jordan
March 8, 2006
Page 2
The patent in suit was filed in 1992. In the late 1980s and early 1990s a number of
groups in the United States worked on developing LCD backlights that utilized lens arrays like
those claimed in the patent in suit. In addition to one or more groups at Honeywell, groups at
Compaq, IBM, 3M, Optical Imaging Systems, NiOptics, and perhaps others were directly or
indirectly working to develop such LCD modules. Since that time, Optrex understands that
virtually all of the relevant individuals (perhaps as many as two dozen) who worked in these
groups have moved on to other employment. Consequently, these individuals are scattered far
and wide across the country. Moreover, many of the relevant companies either changed names
or were sold to still other companies (eg., Hewlett-Packard purchased Compaq, Optical Imaging
System was purchased by Guardian Industries, etc.). As a result, many of the supporting
documents have changed hands. This fact will necessitate a separate round of depositions to
authenticate the third party records at issue. For these reasons, the 75 hour time limit on third
party depositions proposed by Honeywell is inadequate.
In addition to substantial third party discovery, extensive discovery will be needed from
Honeywell. First, the depositions of the three inventors of the patent in suit and the two
prosecuting attorneys will be taken. Second, depositions will be required to determine which
individuals and groups within Honeywell and its predecessors were developing relevant LCD
displays in the early 1990s. Honeywell and its predecessors also apparently worked closely with
some of the third parties noted above to develop LCD modules and those relationships will need
to be explored.
Depositions of an additional group of Honeywell (or former Honeywell) employees will
be necessary to determine whether Honeywell ever practiced the invention, or if the invention
was simply unused for the decade prior to the filing of this suit. This inquiry relates to the fact
that any damages due to Honeywell from Optrex would be based on a reasonable royalty
resulting from a hypothetical negotiation between Honeywell and Optrex in the mid 1990s.
With respect to the discovery period required in this case, Optrex notes that Honeywell
filed its complaint nearly 17 months ago. All parties, including the manufacturers now being
formally added to the case, have long been aware that this case is moving forward and that
discovery relating to accused modules will take place. Given that all parties have been on notice
for such a long time, Optrex respectfully suggests that the 14 month discovery period (as
proposed by Honeywell and other Manufacturing Defendants) is unnecessary. The 11 month
discovery period proposed by Optrex provides ample time.
Finally, the Optrex proposal for handling trial reflects the reality that a single joint trial of
all Manufacturer Defendant families is unmanageable. Instead, Optrex proposes a lead
defendant (Optrex) and a first two—party trial with Optrex and Honeywell on all issues, with 22
hours per side, prior to trial between Honeywell and the remaining Manufacturer Defendants.
Once the Optrex trial has been completed, it is quite likely that issues common to other
defendants will not need to be relitigated in later trials. Thus, the Optrex proposal permits a
simple and efficient way for the Court to manage the trial of these consolidated cases.
DB02:5223478.l 065004.100l

Case 1:04-cv-01536-JJF Document 46 Filed O3/08/2006 Page 3 of 3
YOUNG CONAWAY STARGATT & TAYLOR, LLP
The Honorable Kent A. Jordan
March 8, 2006
Page 3
Optrex is available at Your Honor’s convenience to answer any questions concerning its
proposals, and Optrex looks forward to discussing this matter during the Cou1t’s scheduling
conference on March 13th.
Respectfully submitted, ·~
7
Z
Karen L. Pascale (#2903)
[[email protected]]
cc: Clerk of Court (by CMF/ECP E-Filing)
CM/ECP Counsel of Record (by E-Filing)
DB02:522347S.l 0650044001